Strength of trademarks
Not all trademarks are created equal. Certain marks are
inherently stronger than other marks. Furthermore, famous
marks are subject to additional protection by U.S. law. The
strength of a trademark is determined by the classification
of the trademark or term as either:
Fanciful trademarks- Fanciful
marks are words that do not have a dictionary definition
(in English or other language); they are simply made
up words. These are the strongest type of trademark and usually
proceed
to registration without major hurdles from the US Patent
and Trademark Office. To be fanciful, the mark
must not have any other meaning.
Examples
of fanciful
trademarks include "Kodak" and "Clorox." Arbitrary trademarks- These
are words that are commonly used, however they are used in
a context that
is
meaningless
to the good
or service associated with the mark.
Examples of arbitrary
marks include "Oracle" for software, "Arrowhead" for
water, and "Apple" for computers.
Suggestive trademarks- These
are marks that suggest some sort of quality or characteristic
of the
product
or
service associated with
the mark. There still has to be some sort of imaginative
leap for the consumer when viewing the mark- the mark cannot
completely describe the goods or services. Suggesting too
much will make the mark be classified as descriptive and
thus much weaker.
Examples of suggestive marks include "Coppertone" for
sun tan lotion and "Greyhound" for bus lines.
As greyhound dogs are fast runners and are often used in
dog races,
customers
might associate their speed with a quick travel service.
Descriptive- These
are the weakest protectable trademarks. A descriptive trademark
immediately describes the underlying goods
or services, without any imagination from consumers. Descriptive
marks can eventually become stronger after long use in the
marketplace.
An example of descriptive mark is "Joe's
15 Minute Oil Change."
A federal
trademark application for a descriptive mark will likely
be be allowed to register
on the Supplemental Trademark Register, as opposed to the
Principal Trademark Register. A descriptive mark may be allowed
to register on the Principal Trademark Register if it has
been used continually in commerce for five years. Click either
of the following links for a detailed description of the
differences between the Principal
Register and the Supplemental
Register.
Generic terms-
There is no protection for generic terms and so they are
not considered trademarks at all. A generic term is a
term that is used to describe an item by calling it by
its common name. For example you could not trademark the
word "Soap" for soap. But you could use an adjective
such as "Sudsy" and have a descriptive mark for "Sudsy
Soap".
Famous
marks often have a problem with becoming too associated
with a particular good or service, and can sometimes become
an
unprotected generic term. Trademark owners must take active
steps to protect their marks from becoming generic.
Examples
of marks that often are used in a generic manner (and their
proper alternatives) include "Kleenex/facial tissue," "Xerox/photocopy,"
and "Google/Internet search."
If you would like additional trademark information, please
contact us by filling out the form on this page, calling
858-350-3124 (San Diego) or toll free at 800-361-1961.
For additional trademark information resources, please visit
our trademark resources
page. |
